Wednesday, April 01, 2015

Some intellectual property issues in collaborations between universities and industry

A paper by J.T. Pronk, et al., in Nature Biotechnology titled How to set up collaborations between academia and industrial biotech companies [Nature Biotechnology 33, 237–240(2015) ] is of interest to IP issues in such collaborations.

The authors emphasize the need to explicitly define relevant contractual terms:

For academic researchers, it may be difficult but is nonetheless essential to accept that'business' aspects of projects cannot be left undefined. In particular, it is naive to expect that emerging conflicts of interest on highly valuable research outputs—be it patents or journal publications—can be amicably settled in the absence of clear written agreements. People and priorities change in industry as well as in academia. Furthermore, in industry, decisions on business issues are rarely made by the scientists with whom the academic scientists interact but, instead, by their managers and by company lawyers. As with contract research, academic partners should be fully aware of confidentiality issues, including the requirement that students who leave their group after contributing to a bilateral collaboration project remain bound to confidentiality until the industrial partner has cleared its work for public disclosure.

Of some details that require articulation:

Contracts covering all issues related to IP, confidentiality, screening of manuscripts and conference contributions—including maximum delays for screening and patenting—should be written and signed before research is initiated. Clear agreements on use and sharing of research materials generated during the project, such as cell lines and microbial strains, may require special attention. Many scientific journals now explicitly require that microbial strains and genetic materials used in published studies be made available, upon request, for academic research. Especially in projects that involve strains and/or DNA constructs provided by the industrial partner, addressing this issue can be challenging.

One notes that, for patent claims involving specific recombinant species, patent law of most countries requires deposit, and thus availability, of said species. Of relevance, the timing of deposit varies among jurisdictions, with Japan requiring deposit early on in the patent process.

The Pronk paper discusses PPPs, public-private partnerships :

Success of a PPP requires a strong sense of common purpose. Excellent communication, via regular 'live' meetings, and sufficient funding for each of the academic partners are two key prerequisites. If resources are spread too thinly (e.g., a single active researcher per participating group for a 5-year funding period), commitment is generally weaker than when at least 3–4 active researchers are funded in each participating group. A clear, joint vision on the future that is embodied by aligned, committed project leadership further strengthens collaboration. Government funding of PPPs generally has a finite lifespan but, with adequate industrial support, some PPPs use it to build a critical mass and performance level that allow them to become financially self-supporting through patenting and licensing incomes.

Irrespective of how industrial participation is arranged, a key challenge for PPPs is to maximize synergy by bringing together competing industries around their research programs. Not all industries, however, are inclined toward this mode of collaboration with academia.

Relevant links (Publications by M. Uhlen)

Cross-reference to IPBiz post on IP issues at Ohio State University:

See also IPBiz discussion of the Busch report:


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